Monday, March 13, 2017

TTAB Dismisses CHRISTIAN LACROIX Fraud Claim: No Intent to Deceive

The Board dismissed this opposition to registration of the mark CHRISTIAN LACROIX for jewelry, buckles, and ash trays, finding that Opposer Lacroix, the well-known French fashion designer, had failed to prove his claim of fraud on the USPTO. Applicant stated that Mr. Lacroix had consented to registration of the mark, but Lacroix claimed that he did not consent and that applicant's statement was intended to deceive the Office. Christian Lacroix v. Christian Lacroix, Snc, Oppositions Nos. 91201563 and 91202642 (March 10, 2017) [not precedential].

In the two applications at issue, the applicant claimed ownership of three prior registrations that include a statement that CHRISTIAN LACROIX identifies an individual whose consent was of record. According to the TMEP, a consent in a prior registration may satisfy the consent requirement in a subsequent application. See TMEP §§ 813 and 1206.04(c) (January 2017). Opposer claimed that the two consents (one executed in 1987, the other in 1995) were no longer viable.

The Board observed that, under certain circumstances, a consent to registration may be implied from the terms of a written agreement." In 1987 Opposer assigned to applicant all of his rights in the trademark CHRISTIAN LACROIX, without any exception or reserve. He agreed to assist Applicant in registering the CHRISTIAN LACROIX trademark, and he agreed not to use the name for any professional or commercial gain that did not benefit applicant.

A reasonable reading of the Trademark Sale Agreement clearly implies Opposer’s consent to Applicant’s right to use and register the CHRISTIAN LACROIX trademark. There is no fraud because Applicant believed that Opposer consented to Applicant’s right to use and register the CHRISTIAN LACROIX trademark in the Trademark Sale Agreement and, thus, Applicant did not have the intent to deceive the USPTO when it filed the subsequent consents to the registration of the mark.

TTABlog comment: Actually, I don't believe applicant "filed" the consents. It just referred to the consents that were in the file of the prior registrations.

Further note: applicant took the testimonial deposition of Mr. Lacroix in France, under Articles 15 and 16 of the Hague Convention on Taking Testimony Abroad in Civil or Commercial Matters, 28 USC 2072. And see TBMP 703.01.